ACID’s frequently asked “IP myths and howlers”….or frequently asked WRONG questions!

How do I register my copyright?

You can’t because in the UK copyright arises automatically upon the creation of a work in a tangible form (e.g. a design drawing); there is no requirement for registration. However, in the USA you can register a copyright.

Where can I patent my design?

You can’t unless you have created a new and inventive product or process. The relevant form of protection for most designs is UK design right which protects the shape and configuration of the design and unregistered Community design right which protects the shape, contours, lines, colours, texture and ornamentation of a design. Design rights arise automatically but, for stronger protection, a Registered UK or Community design can be obtained for a payment of a fee.

Visit the IPO Website

Visit the OHIM Website

If someone makes seven changes or a certain percentage change to a design it becomes a new design!

WrongI It is not the number or percentage of changes that somebody makes to your design but the importance of the elements which they have taken from your design which is important in deciding whether they have infringed your rights in your design.  This will always vary from case to case.

Registering designs is useless because if you make one slight percentage change in the design the registration is invalid

Wrong, because the test for whether a design infringes a registered design is whether it creates the same overall impression as the registered design on the informed user.  It is not simply about counting the number of elements of the design which have been reproduced or changes which have been made to it.

I want to register my design to protect the way it works

You can’t because you would have to apply for a patent rather than a design registration. However, to obtain a patent you would have to demonstrate that the way that your design works is novel and inventive.

I have protected the name of my business because I have registered the name at Company’s house

You haven’t because a registered company name does not give you rights in the name which you can enforce against third parties – for this you need a registered trade mark.

My freelance designer doesn’t have any claim to the rights in my design!

They might because if they produce a design for you, you will only own any UK unregistered design right  which might subsist in the design. There may be other IP rights in the design which you do not own, such as copyright and unregistered Community design right. If you want to own all the intellectual property rights, the best plan is to ask the freelance designer to assign these to you in a written agreement, preferably before they do any work.

If I do not include the ©2009 (name) notice on my work I will not benefit from copyright protection

Not true! In the UK copyright arises automatically when you record your original work in a tangible form. However, it is wise to include such a notice because it notifies others that you are claiming copyright in your work.

If I register a copy of the design before the originator I own the design

You don’t necessarily because whilst you will technically be the owner of the registration, the originator would be able to seek a declaration of invalidity of your registration.

I applied for a registration for my design because I own the company

Wrong! because if you created the design in the course of your employment, even with your own company, the company alone has the right to register the design. The registration will therefore be invalid.

ACID fact:

If you sign a contract without having thoroughly read all the small print, you are legally responsible. You cannot argue that you were unaware of any of the obligations that will then bind you. Your only option will be to argue that there is something fundamentally wrong with the contract, such as a failure of consideration, or a breach of the contract. Even then, the contract may be deemed only “voidable” and not totally void or invalid.

ACID case study:

An ACID member, who signed an agreement with a company called Construct Data Verlag GmbH, brought the issue to ACID’s attention as a warning to all other members to always read the small print before signing any form of contract for directories. A similar invitation has just been received by ACID from a company called Expo-Guide – Exhibitors Directory for Fairs and Exhibitions linking our name to a particular UK exhibition. In the case study, the member potentially signed to pay for a website advertising space for 3 years if a cancellation notice was not received within 3 months of the end of the third year. The agreement provided a 10-day cooling off period in which cancellation was possible so long as it was by registered post. However, the payments invoice, in this case the first indication of the error, was not received until after the 10-day period had elapsed.  Unwittingly, the ACID member signed the Agreement, without fully reading all the clauses, because the offer was sent at roughly the same time as official exhibition documentation. The confusion on the member’s part came about because Construct Data’s offer was headed Fair Guide. Without thinking, the member signed up believing their name would appear in the actual exhibition’s “list of exhibitors’ guide”.

The agreement had clear notification that the FAIR Guide was “independent, objective and not related to any organiser (sic) or marketing association”. However, this information was set out in the body of the text, in smaller print than the larger FAIR Guide heading and not immediately obvious to the reader. The actual payment terms and length of the agreement was in even smaller print.

ACID has recently received a similar mailshot from Expo-Guide. If we were to sign the contract we would be entering into a contract and paying 1271 euros per year. In the separate covering letter from Expo-Guide it says the Expo-Guide is “independent, objective and not affiliated to any fair organiser or marketing organisation”.

ACID (Anti Copying in Design) member Temple Island Collection have scored an early victory against New English Teas in the first of a two part intellectual property case heard in the Patents County Court. Having settled the original dispute about the infringement of its iconic “Red Bus” image a dispute arose about the exact scope of settlement. In addition, New English brought out a second image which Temple alleged infringed its copyright. At a case management conference in June 2011 HHJ Birss QC decided the issues relating to the settlement of the first image could be hived off and dealt with separately and on paper. The second image issue will proceed to Trial in November 2011.  Three main issues required determination relating to the settlement.

The first was the Royalties due under the settlement. New English had agreed to pay 5% of the trade sale price of all past and pending sales of the first image. Later, New English attempted to reduce the royalty on “multi-packs” by 66% on the basis that of the 3 items in the multipack only one featured the first image. Temple disagreed, saying that it was clear that the parties had in mind a 5% payment on the sale price of the product sold which included the image. HHJ Birss QC agreed with Temple, the parties had not invented some complicated mechanism to decide the royalty and Temple’s reflected the parties’ intentions when viewed objectively.

The second issue was the amount of costs payable (by New English) for drafting a licence agreement, the rival figures being £500 and £2000. HHJ Birss QC accepted Temple’s submission that the time taken to draft the licence was not the only factor but that other factors, such as expertise and the value of the document to the parties, were relevant  and awarded £1500.

The third issue was as to whether or not the settlement required New English to enter into a formal licence, and whether that licence should include an ‘open book’ accounting term. This depended upon HHJ Birss QC analysing correspondence between the two parties’ representatives, and he ruled there was no requirement to enter into a formal licence. The Judge however indicated that he would have included an open book term had he found a licence was required.

New English have had to pay over £14,000 to Temple Island for royalties and the licence agreement as well as a previous unpaid amount in costs. Andrew Lee of ACID Accredited law firm McDaniel & Co. said, “This signifies a significant moral and financial victory for Temple Island heading into the determination of the second image in a trial set for November 2011.”

Justin Fielder, Managing Director of Temple Island Collection commented “It has been a long, exasperating road to get to this point, but we were obviously justified in taking this action to protect our intellectual Property rights and are pleased the court agrees.”

Dids Macdonald, ACID’s CEO said, “HHJ Birss QC would appear to be true to his word on simplifying the legal process at the new PCC, by giving both parties tight deadlines and page limits to adhere to relating to submissions. Inevitably, this leads to a more cost and time effective resolution, in this case in favour of ACID member Temple Island.”